London IP - Briefing | Winston & Strawn
••••  Author: Tim Robinson November 13, 2013
Mattel v Zynga
Case Name: J.W. Spear & Sons Ltd, Mattel Inc. and Mattel UK Ltd v. Zynga Inc.
 
The Background

The defendant, Zynga, is a company producing games for mobile devices. It launched its “Scramble with Friends” game across several platforms, including Apple’s iTunes store and Google’s Play store in early 2012. The claimant, Mattel, markets the game Scrabble (which is available on mobile platforms) and owns a number of trade marks relating to this game. It also owns a trade mark for the word “Scramble”. Mattel sued Zynga for infringement of these trade marks. Mattel also sued for the tort of passing off, alleging that the goodwill associated with Mattel’s Scrabble game would be damaged by Zynga’s Scramble With Friends game if consumers (mistakenly) believed it to be a game produced by Mattel.

 
The Decision
The judge found that Mattel’s “Scrabble” trade marks were valid. However, as the signs used by Zynga in their game were not identical to the Mattel trade marks, Mattel was required to show that there was a likelihood of confusion between the Zynga game and its marks in order for there to be an infringement. Mattel therefore presented Survey evidence, aimed at showing consumers had been confused or deceived. However, following the recent trend of UK Courts to such evidence, the judge gave it little weight. Instead, he preferred to base his decision on the other evidence, or lack thereof, put before him in the form of witnesses and the parties’ disclosure. On trade mark infringement, the judge found that the evidence did not establish a likelihood of consumers confusing the marks and so there was no infringement.

Mattel’s “Scramble” trade mark was found to be invalid for being descriptive, although the Judge stated that if the mark had been valid, the Zynga game would have infringed.

On passing off, the judge similarly found that Mattel had not brought sufficient evidence of consumers being deceived into thinking that the Scramble With Friends game was linked to Mattel’s Scrabble game. As there was therefore no misrepresentation, a claim in passing off could not proceed.

Interestingly, the judge did note that Zynga’s logo for the game featured a stylised letter “M”, which was tilted relative to the other letters and contained extra loops, in the word “Scramble”. He said that, in his view, this “gives the impression that the word is Scrabble when one looks at it quickly and has the propensity to confuse”.
 
The Bottom Line
Neither party has emerged as a clear winner in this case. While Zynga fought successfully to continue to the use the name “Scramble With Friends”, the judgment makes clear that Zynga would be well-advised to think about the potential risks of continuing to use its current logo for the game.